The New USPTO Obviousness Guidelines: Is the US Coming Closer to an Inventive Step Standard?

On September 1, 2010, the US Patent and Trademark Office (USPTO) issued new guidelines with respect to the standard of obviousness in view of the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). The purpose of these new guidelines is to remind all US Examiners of the principles of obviousness, to specifically confirm that KSR applies to all technologies rather than just the predictable arts, and to provide additional guidance in view of selected post-KSR Federal Circuit decisions.

In the new guidelines, the USPTO has identified four different “topics” of obviousness, namely:

1. Combining Prior Art Elements

2. Substituting One Element for Another

3. Obvious to Try

4. Considerations of Evidence During Prosecution

However, if one looks at each of the topics in this additional guidance and the underlying decisions closely, it seems that the US standard for obviousness is moving closer to an inventive step style analysis, as discussed in more detail below.

The New USPTO Obviousness Guidelines: Is the US Coming Closer to an Inventive Step Standard? by Joshua Goldberg On September 1, 2010, the US Patent and Trademark Office (USPTO) issued new guidelines with respect to the standard of obviousness in view of the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). The purpose of these new guidelines is to remind all US Examiners of the principles of obviousness, to specifically confirm that KSR applies to all technologies rather than just the predictable arts, and to provide additional guidance in view of selected post-KSR Federal Circuit decisions. In the new guidelines, the USPTO has identified four different “topics” of obviousness, namely: 1. Combining Prior Art Elements 2. Substituting One Element for Another 3. Obvious to Try 4. Considerations of Evidence During Prosecution However, if one looks at each of the topics in this additional guidance and the underlying decisions closely, it seems that the US standard for obviousness is moving closer to an inventive step style analysis, as discussed in more detail below. Combining Prior Art Elements The new USPTO guidelines discuss six cases in this topic, three of which are directed to nonobviousness and three of which are directed to obviousness. In general, the guidelines state that, to establish a prima facie case of obviousness using this approach, an Examiner has to show that the combination of known elements must provide a reasonable expectation that these elements work for their intended purposes. One of ordinary skill must have a reason to and knowledge of how to combine these elements to arrive at the pending claims. In this regard, the prior art can be construed broadly and must be reasonably pertinent to the problem to be solved. In contrast, some examples of useful rebuttal evidence of non-obviousness provided by the USPTO include that the prior art teaches away from the claimed combination, that the prior art’s teachings undermine the very reason being given for the combination of the elements, and that the problem to be solved was not previously known. This, then, seems to be one step toward following the “problem-solution” approach of a traditional inventive step analysis, whereby the first step is determining the problem to be solved, then assessing the solution to this problem in view of the prior art. Substituting One Known Element for Another The new USPTO guidelines discuss seven cases in this topic, two of which are directed to nonobviousness and five of which are directed to obviousness. In general, the guidelines state that when using this approach to establish a prima facie case of obviousness, any “analogous” art used by the Examiner is not limited solely to those references in the field of endeavor, but includes those one of ordinary skill would find useful for applicants’ purpose. In the chemical arts in particular, the guidelines provide that a chemical compound is obvious over structurally similar compounds where a reason exists for one of ordinary skill to select and modify a lead compound from the prior art. However, the guidelines also provide that a compound is non-obvious where there is no reason to modify the prior art lead compound, modifying the prior art lead compound would destroy its advantageous properties, or there is no reasonable expectation of success for modifying the prior art compound to arrive at the claimed compound. Again, the focus of the new obviousness guidelines seems to be on first identifying the problem that is being solved, then assessing the claimed solution to this problem in view of the prior art. In this regard, for chemical cases, the new obviousness guidelines recommend identifying the problem to be solved (i.e., providing a compound for treating a specific disease), then assessing whether the claimed solution to this problem would have been obvious in view of the prior art solutions to this problem (i.e., whether it would have been obvious to modify the prior art lead compound for treating that disease to arrive at the claimed compound). This approach for determining obviousness of a compound seems remarkably similar to a traditional inventive step analysis of this compound. Obvious to Try The new USPTO guidelines discuss seven cases in this topic, four of which are directed to nonobviousness and three of which are directed to obviousness. In general, the guidelines state that an obvious to try rationale is proper when options to solve the identified problem are known and finite. For example, under the standard of In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009), a claimed polynucleotide can be obvious over a known protein where there is a reasonable expectation of success and a reason to try to isolate the claimed polynucleotide from the protein. However, the guidelines also provide that an “obvious to try” rejection can be rebutted by showing that the prior art teaches away from the claimed subject matter, or that no predictability or reasonable expectation of success is found in the prior art. In the chemical arena, a recommended argument for rebuttal is that no finite and easily traversed number of potential compounds or known solutions to the problem existed and there was no reason for selecting a starting compound from unpredictable alternatives in the prior art. Here again, according to the “obvious to try” rationale, a critical component seems to be first identifying the problem to be solved, then assessing how many options to this problem were known in the prior art. Establishing that an infinite, or unreasonable, number of solutions to this problem were previously known in the prior art is a recommended strategy for overcoming such an “obvious to try” rejection. So under this scenario, following an inventive step “problem-solution” approach is also recommended by the USPTO to overcome an obviousness rejection. Consideration of Evidence The new USPTO guidelines discuss four cases in this topic. In general, the guidelines state that all evidence of non-obviousness must be considered. Even so, evidence of non-obviousness may be outweighed by contradictory evidence in the record. Conclusion While it is unlikely any patent practitioner or Examiner in the US would call the US standard for obviousness to be an “inventive step” standard, in practical effect this seems to be the direction in which the US is headed. The USPTO’s 2010 obviousness guidelines, as well as the underlying cases discussed therein, make clear that US Examiners are now being trained to look to the problem identified by the applicant, and then comparing the applicants’ solution to this problem with the solutions identified in the prior art. Without calling it inventive step, then, these new obviousness guidelines make clear that the current corps of Examiners is being trained using just such an approach. This will be important for all applicants and their counsel to consider when trying to overcome US obviousness rejections moving forward.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

- hide

Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.